Galderma Laboratories, L.P. v Tolmar, Inc.

When the result was a matter of degree and was not different in kind, obviousness was found.

Opinion (Prost): Tolmar, Inc. ("Tolmar") appealed a district court ruling that Galderma Laboratories, L.P. ("Galderma") patents asserting composition and concentration claims were valid and non-obvious. Galderma claimed a concentration of 0.3% adapalene which Tolmar argued was within the range described in a prior patent claiming adapalene was effective in concentrations between 0.001%, 0.1, and 1.0%. Furthermore, Tolmar argued it was merely using an old compound for a known purpose. The district court erred in determining that Tolmar failed prove that tripling the concentration would have been obvious to PHOSITA because it would increase the risk of side effects. Tolmar’s only burden was to show that, taken as whole, the invention would have been obvious. Since the range described in the prior art encompasses a concentration of 0.3%, Tolmar met its burden. Once obviousness is determined a court must determine whether prior art “teaches away.” The District Court held that prior art “taught away” because of a potential increase in side effects, and that 0.1% was the optimal concentration. Dealing with both issues, the Circuit Court of Appeals determined that “teaching away” does not include merely expressing a general preference which does not criticize, discredit, or otherwise discourage use. Finally, the Circuit Court of Appeals determined to be unexpected the result must be different in kind, and not merely degree. Thus, the District Court erred when it held that the difference in results from tripling the concentration was unexpected rather than merely degree. REVERSED.